1. www.icann.org/en/help/
dndr/udrp/policy
2. 15 U.S.C. § 1125(d).
3. www.icann.org/
registrar-reports/accredited-list.html (.aero, .asia, .biz, .cat,
.com, .coop, .info, .jobs, .mobi,
.museum, .name, .net, .org, .pro,
.tel, .travel and .xxx).
4. Rule 17, The National Arbitration
Forum’s Supplemental Rules to
ICANN’s Uniform Domain Name
Dispute Resolution Policy.
5. www.wipo.int/amc/en/
domains/fees/
6. www.wipo.int/amc/en/
domains/fees/ index.html
7. Policy § 4(a)(i).
8. See SeekAmerica Networks Inc. v.
Masood (WIPO Case No. D2000-
0131), in which it was found that
the Policy does not require that
the complainant’s trademark or
service mark be registered by a
government authority or agency
for such rights to exist, while in
British Broad. Corp. v. Renteria
(WIPO Case No. D2000-0050) it
was said that the Policy “does not
distinguish between registered and
unregistered trademarks and service marks in the context of abusive
registration of domain names” and
that the Policy applies equally to
“unregistered trademarks and
service marks.”
9. Uitgeverij Crux v. W. Frederic Isler
(WIPO Case No. D2000-0575)
(“A fundamental principle of
trademark law is that rights in
a trademark can be acquired
through use, and such rights exist
even though the trademark may
not be registered”).
10. Policy § 4(a).
11. See St. Lawrence Univ. v. Nextnet
Tech, FA 881234 (Nat. Arb.
Forum Feb. 21, 2007) (holding
that using an identical or confusingly similar domain name to
receive click-through fees via
sponsored links to a complainant’s
business competitors does not represent a bona fide offering of
goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii)); See also Mobile
Communication Service Inc. v.
WebReg, RN (WIPO Case No.
D2005-1304); Gerber Products
Co. v. LaPorte Holdings (WIPO
Case No. D2005-1277); Media
General Communications, Inc. v.
Rarenames, WebReg (WIPO Case
endnotes
13. See, e.g., John Ode dba ODE
and ODE - Optimum Digital
Enterprises v. Intership Limited
(WIPO Case No. D2001-
0074); PrintForBusiness B.V v.
LBS Horticulture (WIPO Case
No. D2001-1182).
14. See Telecom Italia S.p.A. v.
NetGears LLC, FA 944807
(Nat. Arb. Forum May 16,
2007) (determining that
respondent could not have registered or used the disputed
domain name in bad faith
where the respondent registered the disputed domain
name before the complainant
began using the mark).
15 The WIPO Overview of Panel
Views on Selected UDRP
Questions 2.0 (“WIPO
Overview 2.0”), ¶ 3. 1, provides the following examples:
shortly before or after a publicized merger between companies, but before any new trademark rights in the combined
entity have arisen; or when the
respondent (e.g., as a former
employee or business partner,
or other informed source)
seeks to take advantage of any
rights that may arise from the
complainant’s enterprises; or
where the potential mark in
question is the subject of substantial media attention (e.g.,
in connection with a widely
anticipated product or service
launch) of which the respondent is aware, and before the
complainant is able to obtain
registration of an applied-for
trademark, the respondent registers the domain name in
order to take advantage of the
complainant’s likely rights in
that mark. (In all such cases, in
order to have a chance to succeed in any filed UDRP complaint, the complainant must
actually demonstrate relevant
trademark rights, as these are
a precondition for satisfying the
standing requirement under
the first element of the UDRP
for rights in a mark.)
16. See Valve Corporation v.
ValveNET, Inc. (WIPO Case
No. D2005-0038).
17. See Octogen Pharmacal
Company, Inc. v. Domains By
Proxy, Inc. / Rich Sanders and
Octogen e-Solutions (WIPO
Case No. D2009-0786); See
also City Views Limited v.
Moniker Privacy Services /
Xander, Jeduyu, ALGE-
BRALIVE (WIPO Case No.
D2009-0643):
Under paragraph 4(b)(iv) of
the Policy a respondent that
uses the domain name to
attract Internet users to its
website or online location by
creating a likelihood of con-
fusion with the complainant’s
mark and its sponsorship of
the website is acting in bad
faith, without reference to
the respondent’s state of
mind at the time that the
registrant registered the
domain name. Clearly, as
under the Telstra analysis,
in this Panel’s view bad faith
registration can be deemed to
have occurred even without
regard to the state of mind
of the registrant at the time
of registration, if the domain
name is subsequently used to
trade on the goodwill of the
mark holder, just as bad faith
use can occur without regard
to the fact that the domain
name at issue has not been
(or has been ‘passively’) used.
